Patent infringement litigation : trends and the role of patent examinations / Lindsey Gonzales, editor.

Format:

Book

Contributor:

Gonzales, Lindsey, editor.

Series:

Intellectual property in the 21st century (Hauppage, N.Y.)

Intellectual Property in the 21st Century

Language:

English

Subjects (All):

Patent suits--United States--Statistics.

Patent suits.

Patents--Research--United States--Methodology.

Patents.

Physical Description:

1 online resource (158 p.)

Place of Publication:

New York, [New York] : Nova Publishers, 2015.

Summary:

In August 2013, the U.S. Government Accountability Office (GAO) issued a report, for which they performed a required study on patent litigation. The study aimed to find out what was known about the extent and characteristics of patent litigation; to survey knowledgeable stakeholders about factors influencing patent litigation; to identify judicial developments that could impact patent litigation; and to examine actions taken by the United States Patent and Trademark Office (USPTO or Office) that could affect future patent litigation. The report concluded with a recommendation that the Secretary of Commerce direct the Director of PTO to consider examining trends in patent infringement litigation, including the types of patents and issues in dispute, and to consider linking this information to internal data on patent examination to improve the quality of issued patents and the patent examination process. The USPTO agreed that it would be appropriate to undertake an investigation of trends in patent infringement litigation, and to consider how any trends discovered could potentially be linked to its own internal patent examination data. The USPTO further agreed that it would be appropriate to consider whether the results of the investigation could be used to support its ongoing efforts to improve the patent examination process, and ultimately the quality of issued patents. In addition, the USPTO chose to include inter partes review (IPR) proceedings in the study, with the goal of gaining additional insights that could lead to enhanced patent quality. The USPTO carried out the investigation as recommended by GAO, and this book details the methodology and results.

Contents:

PATENT INFRINGEMENT LITIGATION TRENDS AND THE ROLE OF PATENT EXAMINATIONS ; PATENT INFRINGEMENT LITIGATION TRENDS AND THE ROLE OF PATENT EXAMINATIONS ; Library of Congress Cataloging-in-Publication Data; CONTENTS ; PREFACE ; Chapter 1 PATENT LITIGATION AND USPTO TRIALS: IMPLICATIONS FOR PATENT EXAMINATION QUALITY*; EXECUTIVE SUMMARY ; Introduction ; Methods ; Results ; 1. INTRODUCTION ; 2. BACKGROUND; 2.1. Determinants of Litigation ; 2.2. A Brief Literature Review ; 2.3. The Patent Examination Process ; 3. MATCHED CASE-CONTROL STUDIES ; 3.1. Data Sources

3.1.1. GAO Litigated Patent Data3.1.2. PTAB Inter Partes Review Data ; 3.1.3. PALM Data ; 3.1.4. Other USPTO Data Sources ; 3.1.5. Database Construction ; 3.2. Matched Samples ; 3.2.1. Matching Algorithms ; 1. Define the set of all potential matches. ; 2. Choose one control patent for each litigated patent as defined by the particular matching algorithm. ; a. Citation match. ; b. Propensity score matching. ; 3.2.2. Matched Litigation Sample ; 3.2.3. Matched IPR Sample ; 3.3. Explanatory Variables ; 3.3.1. Application Characteristics ; Small Entity Status; Number of Parent Applications

PendencyForeign Origin ; 3.3.2. Examination Characteristics ; IDS Filings ; Number of Interviews ; Examination Pendency ; RCE Count; Appeals ; First-Action Allowance ; Examiner Seniority ; 3.3.3. Characteristics of Allowed Claims ; Number of Independent Claims ; Words Per Independent Claim; Functional Claiming ; 4. ESTIMATION OF MATCHED CASE-CONTROL STUDIES ; 4.1. Incidence of Litigation ; 4.1.1. Means Comparisons ; 4.1.2. Conditional Logistic Results ; 4.2. The Likelihood of an IPR Petition ; 4.2.1. Means Comparisons ; 4.2.2. Conditional Logistic Results

5. COMPARISON OF INSTITUTED AND NON-INSTITUTED IPR-PETITIONED PATENTS 5.1. Data and Methods ; 5.2. Results ; 5.2.1. Descriptive Statistics ; 5.2.2. Logistic Results ; 6. HANDS-ON REVIEW OF PATENTS WHICH HAVE UNDERGONE IPR ; 6.1. Data and Methods ; 6.2. Results ; 6.2.1. Sources of Prior Art Relied on in the Decision ; 6.2.2. The Examiner's Prior Art Search; 6.2.3. The Examiner's Handling of Prior Art Rejections ; 6.2.4. The Examiner's Handling of Application Continuity ; 6.2.5. Substantive Interviews between the Examiner and the Applicant ; 6.2.6. Claim Interpretation Issues ; CONCLUSION

8. GLOSSARY 9. APPENDIX I. IPR PROCEEDINGS STUDIED IN HANDS-ON REVIEW ; 10. APPENDIX II. QUESTIONNAIRE FOR HANDS-ON REVIEW BY QUALITY ASSURANCE SPECIALISTS AT USPTO; REFERENCES ; End Notes ; Chapter 2 INTELLECTUAL PROPERTY: ASSESSING FACTORS THAT AFFECT PATENT INFRINGEMENT LITIGATION COULD HELP IMPROVE PATENT QUALITY* ; WHY GAO DID THIS STUDY ; WHAT GAO RECOMMENDS ; WHAT GAO FOUND ; ABBREVIATIONS ; BACKGROUND ; NUMBER OF PATENT INFRINGEMENT LAWSUITS INCREASED SIGNIFICANTLY IN 2011 AND THE NUMBER OF DEFENDANTS INCREASED BETWEEN 2007 AND 2011

Number of Patent Infringement Lawsuits Fluctuated Slightly before Increasing in 2011, but Number of Defendants Increased from 2007 to 2011

Notes:

Description based upon print version of record.

Includes bibliographical references and index.

Description based on online resource; title from PDF title page (ebrary, viewed April 1, 2016).

ISBN:

1-63483-535-2